DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species A: Figs. 1-8 in the reply filed on 10/21/2025 is acknowledged.
Claims 1-7 and 10-12 are identified as reading on the elected species.
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/21/2025.
Claims 1-12 are presented.
Claims 8-9 are withdrawn.
The present office action treats claims 1-7 and 10-12 on the merits.
The present office action is a non-final rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites “wherein the second support extends so that a back side of the second support is positioned higher”. Usage of the term “higher” renders the claim indefinite insofar as it is not clear what structure the back side of the second support is positioned higher than (emphasis provided by Examiner). For the purpose of applying art, the phrase “wherein the second support extends so that a back side of the second support is positioned higher” is interpreted as if it reads -- wherein the second support extends so that a back side of the second support is positioned higher than a front side of the second support--.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim(s) 1-6 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Giandolini, US 2024/0114998] in view of [Foxen, US 2019/0037964].
Regarding claim 1:
Giandolini discloses (Figs. 1-10):
A sole structure comprising:
a midsole 331;
a first support 3321 which is formed in a plate shape (para 61; Figs. 1-6 and 9-10); which is provided in a midfoot region of the midsole (Figs. 1-4 and 7); and which is disposed along a lower surface of the midsole (para 59; Figs. 1-4, 6-7, and 10); and a second support 3322; which is disposed behind the first support 3321 (Figs. 1-5 and 9-10); and which is provided on a side portion of the midsole (para 75; Figs. 1-4, 8, and 10).
Giandolini does not expressly disclose the first support 3321 which is formed in a plate shape; which is firmer than the midsole.
Giandolini does not expressly disclose the second support 3322 which is firmer than the midsole.
Giandolini describes first support 3321 as having a “modulus of elasticity, or Young's modulus, greater than 750 MPa” and “less than 70 GPa. Such a material may be a thermoplastic polymer, for example, polyamide (PA), thermoplastic polyurethane (TPU), or a composite material comprised of a thermoplastic/thermosetting matrix (PA, TPU, epoxy, etc.) combined with fibers (glass, carbon, linen, etc.). According to one embodiment, this material has a hardness greater than 40 shore I), preferably greater than 50 shore D” (para 62).
Giandolini describes second support 3322 as “made of a material having a modulus of elasticity, or Young's modulus, greater than 100 MPa. Advantageously, in order not to penalize the vibration shock absorption property of the cushioning layer of the” midsole 331 “the modulus of elasticity is less than 2.000 MPa. Such a material may be a thermoplastic polymer, for example polyamide (PA), thermoplastic polyurethane (TPU), or a composite material comprised of a thermoplastic/thermosetting matrix (PA, TPU, epoxy, etc.) combined with fibers (glass, carbon, linen, etc.). According to one embodiment, this material has a hardness greater than 40 shore D, preferably greater than 50 shore D.” (para 88).
Giandolini is silent as to an express value of modulus and/or hardness of the midsole 331, one of ordinary skill would look to the description of Giandolini in describing midsole 331 as “cushioning” and “made of a material comprised of cellular foam” (para 54) and as having “shock absorption property” (para 88) in comparison to the “rigid” supports 3321, 3322 (para 59; para 73) wherein “rigid” support 3321 is configured to “stiffen the sole in the area of the metatarsals, thus limiting their flexion” (para 59) and wherein “rigid support 3322” is configured “to ensure a certain strength, rigidity, of the rigid support and good support of the lateral and medial wings” (para 74) and at least expect each of rigid supports 3321, 3322 to be firmer than the cushioning, shock-absorbing, foam midsole 331.
However, Foxen teaches a support 80 (i.e. “Elongate insert 80”; para 38 wherein “support” is “provided by the elongate insert” (para 8) is firmer than a cushioning foam midsole 31: “Midsole 31 may be formed from a...foam element...that attenuates ground reaction forces (i.e., provides cushioning)...Insert 80 may be formed of a stronger, stiffer, or otherwise more rigid material than the material of midsole 31”; paras 45-46.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to have modified the sole structure of Giandolini such that its first support 3321 which is formed in a plate shape is firmer than the midsole and that its second support 3322 is firmer than the midsole in order yield a sole structure whose midsole is configured to attenuate ground reaction forces and whose first and second supports are configured to provide more relative rigidity to the sole structure than the midsole.
Regarding claim 2:
Giandolini in view of Foxen teach The sole structure of claim 1, as set forth above.
Giandolini further discloses wherein the second support 3322 includes an inner section 3322M extending from an inner side of the first support 3321 backward along an inner side of the midsole 331 in the foot width direction (para 75; Figs. 2, 4-5, and 7-9).
Regarding claim 3:
Giandolini in view of Foxen teach The sole structure of claim 2, as set forth above.
Giandolini further discloses wherein the second support 3322 further includes an outer section 3322L extending from an outer side of the first support 3321 backward along an outer side of the midsole 331 in the foot width direction (para 75; Figs. 1-3, 5-7, and 9).
Regarding claim 4:
Giandolini in view of Foxen teach The sole structure of claim 1, as set forth above.
Giandolini further discloses wherein the first support 3321 is provided in the midfoot region and a forefoot region of the midsole (Figs. 1-4 and 10).
Regarding claim 5:
Giandolini in view of Foxen teach The sole structure of claim 2, as set forth above.
Giandolini further discloses wherein the second support 3322 extends so that a back side (a side closest to rear end 3311R) of the second support 3322 is positioned higher (Figs. 1-4 and 10).
(i.e. back side positioned higher than a side closest to front end 3311F).
Regarding claim 6:
Giandolini in view of Foxen teach The sole structure of claim 2, as set forth above.
Giandolini further discloses wherein the midsole 331 includes a side portion (Figs. 1-4, 7-8, and 10) provided with a recess (within which 3322L and/or 3322M is/are provided) which is formed in a groove shape (Figs. 1-4, 7-8, and 10) and which extends backward (Figs. 1-4, 7-8, and 10) from the first support 3321, and the second support is disposed on the recess (para 75; Figs. 1-4, 7-8, and 10 and, particularly, Fig. 8).
Regarding claim 10:
Giandolini in view of Foxen teach The sole structure of claim 1, as set forth above.
Giandolini further discloses and an upper 2 (“upper 2”; para 49).
Regarding claim 11:
Giandolini in view of Foxen teach The sole structure of claim 2, as set forth above.
Giandolini further discloses and an upper 2 (“upper 2”; para 49).
Regarding claim 12:
Giandolini in view of Foxen teach The sole structure of claim 3, as set forth above.
Giandolini further discloses and an upper 2 (“upper 2”; para 49).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over [Giandolini, US 2024/0114998] and [Foxen, US 2019/0037964] as applied to claim 1 above and further in view of [Van Elten, DE-102015118251-A1].
Regarding claim 7:
Giandolini in view of Foxen teach The sole structure of claim 1, as set forth above.
Giandolini further discloses further comprising a support plate 334 which is disposed along (Figs. 1-6 and 10) the first support 3321.
Giandolini does not expressly disclose the support plate 334 which is disposed along the first support and which is more solid than the first support.
However, Van Elten teaches a support plate 12 (“outsole”; the final full paragraph of p. 6) wherein the support plate is more solid (“highest density”) than the sole structure layers (i.e. “midsole” 16 and “damping material” 14; same paragraph) provided above (Figs. 1-5 and 7) the support plate 12.
Van Elten further teaches the support plate 12 (i.e. “outsole”) “comprises the material with the highest density and is thus adapted to be resistant to mechanical damage that may be caused by the running surface” (the final full paragraph of p. 6).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to have modified the modified Giandolini such that its support plate is more solid than the first support in order to render the support plate particularly resistant to mechanical damage that could be cause by a running surface, as suggested by Van Elten (the final full paragraph of p. 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRADY A NUNNERY whose telephone number is (571)272-2995. The examiner can normally be reached 8-5 M-F.
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/GRADY ALEXANDER NUNNERY/Examiner, Art Unit 3732